UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/605170

 

This letter responds to the applicant’s communications filed on September 6, and 9, 2005.  In its responses, the applicant has amended the application to include the required disclaimer of WATERS which is acceptable and has been made of record. The applicant has also added a second class to the application.

 

The applicant will note the remaining issues.

 

Identification / Classification of Goods

The original application identified the goods as, “water.” In the response dated September 6, 2005, the applicant added a second class to the application and identifies the goods as “Distilled water,” in Class 1 and “Drinking water, spring water,” in Class 32. Then, in its response of September 9, 2005, the applicant amends the identification of goods to read as “Drinking water, spring water, mineral water and flavored water,” in Class 32 with no mention of the newly added Class 1. 

 

Thus, the identification of goods as amended, now reads as follows:

 

Class 001:            Distilled water

 

Class 032:            Drinking water, spring water, mineral water and flavored water

 

The amended identification and classification is acceptable.  However, it is unclear whether the applicant intended to delete the Class 1 goods with its response dated September 9, 2005.  Thus, the applicant must clarify the amended identification/classification of goods.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Substitute Declaration Required

In its response dated September 6, 2005, the applicant refers to a withdrawal of the requirement for a substitute declaration per a telephone conference of July 26, 2005.  Next, in its response dated September 9, 2005, the applicant submits arguments traversing the requirement.  The application record does not include a note withdrawing the requirement and the examining attorney does not recall making a withdrawal of the requirement. The examining attorney apologizes if any communication with the applicant was unclear and invites the applicant to telephone with any questions.  Unfortunately, the requirement for a substitute declaration must be maintained and made final.  The examining attorney sets forth TMEP §1101 below which states:

 

1101       Bona Fide Intention To Use the Mark In Commerce

Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce "under circumstances showing the good faith of such person." 

A verified statement of the applicant's bona fide intention to use the mark in commerce must be included in intent-to-use applications under §1(b), and in applications under §§44 and 66(a), 15 U.S.C. §§1126 and 1141f(a).  See TMEP §1904.01(c) regarding the requirement for a declaration of the applicant's bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application.  37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii).  See TMEP §§804 et seq. regarding verifications.

A verified statement of the applicant's continued bona fide intention to use the mark in commerce must be included in a request for an extension of time to file a statement of use.  15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3); TMEP §§1108.02 and 1108.02(e). 

Reasonable variations in the wording of the statement may be acceptable.  For example, the applicant may state that it has "a bona fide intention to use in commerce the mark on or in connection with...," or may use the words "good faith" instead of "bona fide."  However, the wording "in commerce" is required and cannot be varied.  In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm'r Pats. 1991); In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397 (Comm'r Pats. 1991).

See TMEP §1201.03(a) regarding an assertion by an intent-to-use applicant of a bona fide intention to use the mark in commerce through a related company.

See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44 of the Trademark Act.

The Office will not evaluate the good faith of an applicant in the ex parte examination of applications.  Generally, the applicant's sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context.  Consideration of issues related to good faith may arise in an inter partes proceeding, but the Office will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce. 

(emphasis added).   Thus, if the applicant wishes to maintain its intent-to-use basis for registration, the applicant must submit the following statement exactly as worded: 

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application. 

 

TMEP §1101.  This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii).  The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

Response to Final Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

/Tracy L. Fletcher/

Trademark Examining Attorney

Law Office 115

U.S. Patent & Trademark Office

Telephone: (571) 272-9471

Facsimile: (571) 273-9471

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.